Ex parte Chen

Board of Patent Appeals and Interferences

Jun 21, 2001

08463282 (B.P.A.I. Jun. 21, 2001)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL CHEN
____________
Appeal No. 1998-2841
Application No. 08/463,282
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ON BRIEF
____________
Before KRASS, FLEMING, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1-3, which are all the claims remaining in the application.
We reverse.
Appeal No. 1998-2841
Application No. 08/463,282
Since there is no “emitting means” previously set forth in the claim, the recitation should be1
changed to “said signal emitter” to avoid a lack of proper antecedent.
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BACKGROUND
The invention is directed to a remote control security system for an automobile; in
particular, a remote control transmitter and receiver. Claim 1 is reproduced below.
1. In a remote control security system for an automobile, comprising a remote
control unit, a receiving unit, and an operation unit connected to said receiving unit;
said remote control unit emitting a combination code signal and said receiving unit
receiving said combination code signal so as to control operation of said security
system:
wherein said remote control unit includes a keyboard, an encoder and a
signal emitter; said encoder produces a combination code corresponding to said
combination code signal according to a signal from said keyboard, and said
combination code is transmitted by said signal emitter;
wherein said receiving unit includes a receiver and a decoder; said receiver
receiving the combination code signal sent by said emitting means of said remote1
control unit and said decoder including means for comparing said a received
combination code decoded from said combination code signal with a combination
code produced by said decoder; and
wherein if the received combination code matches the combination code
produced by the decoder, a control signal is transmitted to said operation unit to
control operation of the security system,
the improvement wherein the combination code comprises a fixed
combination code and two variable remedy codes, and said encoder and decoder
each includes means for sequentially varying a first of the remedy codes once each
time a key on said keyboard is pressed, and for sequentially varying a second of
the remedy codes constantly between a time that said key is pressed and a time
that said key is released.
Appeal No. 1998-2841
Application No. 08/463,282
The Final Rejection, at page 2, also sets forth a rejection of claim 3 under 35 U.S.C. § 112,2
second paragraph. The rejection for indefiniteness has been withdrawn by the examiner upon entry of the
amendment after final filed April 22, 1997 (Paper No. 5). However, the appendix of claims submitted with
the Brief does not reflect the noted amendment to claim 3.
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Claims 1-3 stand rejected under 35 U.S.C. § 112, first paragraph, for failing to
provide an enabling disclosure.2
We refer to the Final Rejection (Paper No. 4) and the Examiner's Answer (Paper
No. 16) for a statement of the examiner's position and to the Brief (Paper No. 15) and the
Reply Brief (Paper No. 17) for appellant’s position with respect to the claims which stand
rejected.
OPINION
Before turning to the instant rejection of claims 1-3 under 35 U.S.C. § 112, first
paragraph, we briefly review the requirements of the statute with respect to providing an
enabling disclosure.
The first paragraph of 35 U.S.C. 112 requires, inter alia, that the
specification of a patent enable any person skilled in the art to which it
pertains to make and use the claimed invention. Although the statute does
not say so, enablement requires that the specification teach those in the art
to make and use the invention without ‘undue experimentation.’ In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some
experimentation may be required is not fatal; the issue is whether the amount
of experimentation required is ‘undue.’ Id. at 736-37, 8 USPQ2d at 1404.
In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
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The question is whether the disclosure is sufficient to enable those skilled in the art
to practice the claimed invention; the specification need not disclose what is well known in
the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d
1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d 420, 161
USPQ 668 (CCPA 1969)). "A patent need not teach, and preferably omits, what is well
known in the art." Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1534, 3
USPQ2d 1737, 1743 (Fed. Cir. 1987). "Not every last detail is to be described, else
patent specifications would turn into production specifications, which they were never
intended to be." In re Gay, 309 F.2d 769, 774, 135 USPQ 311, 316 (CCPA 1962).
The examiner bears the initial burden of setting forth a reasonable explanation as to
why the scope of protection provided by the claims is thought to be not adequately enabled
by the description of the invention provided in the specification. If that burden is met, the
burden then shifts to the applicant to provide proof that the specification is indeed
enabling. In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993).
The statement of the rejection (Final Rejection, pages 1-2; Answer, page 6) does
little to meet the initial burden. The rejection merely alleges that certain aspects of the
disclosure are not clearly understood, which, without more, does not show lack of
enablement. “Whether undue experimentation is needed is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
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Application No. 08/463,282
We note that, consistent with the law of our reviewing court, Office policy is to consider all the3
relevant factors when making a rejection for lack of enablement. “The examiner’s analysis must consider
all the evidence related to each of these [In re Wands] factors, and any conclusion of nonenablement must
be based on the evidence as a whole.” Manual of Patent Examining Procedure § 2164.01(a), Seventh
Edition, Rev. 1 (Feb. 2000).
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considerations.” In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). The factors to be considered in determining whether a disclosure would require
undue experimentation include:
(1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill of
those in the art, (7) the predictability or unpredictability of the art, and (8) the
breadth of the claims.
Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
The statement of the rejection is thus plainly deficient. In our view, other factors --3
not addressed in the rejection -- which are relevant to the enablement analysis outweigh
any facts relied upon by the examiner.
As a general consideration, the level of predictability in the mechanical and
electrical arts is recognized as being relatively high. See, e.g., In re Hogan, 559 F.2d 595,
606, 194 USPQ 527, 537-38 (CCPA 1977) (taking notice of the high level of predictability
in mechanical or electrical environments and the lower level of predictability expected in
chemical reactions and physiological activity).
Appeal No. 1998-2841
Application No. 08/463,282
Enablement is determined as of the filing date of the application. Hybritech Inc. v. Monoclonal4
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986). Appellant refers, at least on
page 16 of the Brief, to U.S. Patent 5,517,187 (Bruwer), issued May 14, 1996. However, the relevant date
for enablement is the instant filing date of June 5, 1995. Bruwer’s disclosure of Bruwer’s invention cannot
be used as evidence relating to what the artisan knew in June, 1995. Later publications may, in some
circumstances, be used as evidence to show the state of the art at an earlier time. See, e.g., Hogan, 559
F.2d at 605 n.17, 194 USPQ at 537 n.17 (noting use of later publications as evidence of the state of art
existing on the filing date of an application). Here, however, appellant refers to Bruwer’s own invention, of
which the artisan was not necessarily aware in June, 1995.
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In the Brief and Reply Brief, appellant refers to several U.S. patents which serve as
extrinsic evidence of both the state of the prior art and the relative skill of those in the art. 4
Yet, the Answer does not address the evidence provided by appellant in rebuttal to the
rejection. Of particular interest is U.S. Patent 5,103,221 (Memmola), which is listed as
“prior art of record relied upon in the rejection of claims under appeal” (Answer, page 5),
but is not otherwise mentioned in the rejection.
Memmola discloses a remote-control security system, suitable for use with an
automobile, which includes a remote control unit and a receiving unit (Fig. 1). The remote
control unit includes a keyboard, an encoder, and a signal emitter. The receiving unit
includes a decoder. As described in particular at columns 8 through 13, Memmola
discloses a code comprising a base, or “starting,” security code. Each time a keyboard
switch is activated, an algorithm determines modification of the present code. The remote
control unit encodes a signal which includes the base code, the modified code, and the
channel code (which is a unique switch code). The encoded signal may be transmitted to
the receiving unit, which decodes the received signal and compares the signal to the
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expected base code and the modified code as predicted by the algorithm. If there is a
match between the base code and the modified code between the remote unit and the
receiving unit, then the receiving unit generates an actuating signal that is dependent on
the received channel code.
In view of Memmola’s disclosure, we find that the level of ordinary skill in the art was
relatively high, and the state of the prior art could not have been far removed from the
instantly claimed invention. Further, at least in view of the claim format chosen by
appellant, the instant claims are relatively narrow in scope. Independent claim 1 is drafted
in the well-known Jepson format; everything prior to the final portion, which begins with “the
improvement wherein,” is presumed to be descriptive of the prior art. We interpret the
claim as setting forth elements which are conventional or known in the portion preceding
“the improvement wherein,” with the conventional or known elements forming part of the
combination. See, e.g., Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed.
Cir. 1997).
The scope of the claims is limited, accordingly, as being an improvement of the
prior art described. Consistent with the presumption that is implicit in the claims, it
appears that Memmola discloses all that is claimed in claim 1 but for the improvement that,
rather than a code comprised of a fixed code and a single variable code, the code further
Appeal No. 1998-2841
Application No. 08/463,282
The significance of the language “remedy codes” is not apparent, and even appellant’s counsel5
appears to not understand the import of the recitation (Brief, page 10). The rejection does not fault the
language “remedy codes” per se. We do not consider the modifier “remedy” to be fatal to an understanding
of the subject matter, and interpret “remedy codes” as simply meaning codes that are distinct from the
“fixed combination code,” and which are as further defined by the claim recitations.
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comprises a code which sequentially varies between a time that a key is pressed and a
time that the key is released.5
In light of the evidence before us, the questions posed by the examiner are
misplaced. For example, it matters little, contrary to the implication on page 6 of the
Answer, whether the additional codes are generated by an algorithm, are pre-stored (i.e.,
tabular), or are the product of a random number generator. Using any of the methods
would have been within the immediate understanding of the ordinary artisan. The instant
claims, as the disclosure, are not specific as to how the codes may be encoded and
decoded. However, to practice the full scope of the claimed invention, we find that the
details of implementation would not have required undue experimentation. An applicant
need not, and preferably does not, disclose what is already well known in the art.
In this regard we agree with appellant that the rejection appears to wrongly place
emphasis on what the original specification failed to disclose. Determining what the
specification does not disclose is, at best, merely a first step in determining whether the
claimed invention is enabled. The examiner refers to tools in the prior art (e.g., to “stop
bits” and “headers” at the bottom of page 10 of the Answer) which may, or may not, be
used in implementation of the invention. The inquiry should be directed to whether the lack
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of description of those things not detailed in the specification would prevent the artisan
from making and using the invention claimed.
Upon weighing the factual considerations before us, we do not agree that the
instant disclosure fails to teach the artisan how to make and use the claimed invention. At
least for the reason that the rejection fails to consider the evidence as a whole, we do not
sustain the rejection of claims 1-3 under 35 U.S.C. § 112, first paragraph.
CONCLUSION
The rejection of claims 1-3 is reversed.
Appeal No. 1998-2841
Application No. 08/463,282
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REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 1998-2841
Application No. 08/463,282
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